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When Innovation Invents: Artificial Intelligence Issues at the U.S. Patent and Trademark Office

The Situation: Artificial intelligence ("AI") is growing more powerful and gaining application in many areas. AI can now create new innovation on its own, without a human inventor—a capability that will only expand as...more

Patenting Digital Health Innovations Incorporating AI in View of USPTO's Recent Subject Matter Eligibility Guidance

Patent procurement activity is increasing to protect embedded artificial intelligence ("AI") technologies in a variety of digital healthcare solutions. The United States Patent and Trademark Office ("USPTO") has issued the...more

PTAB Issues Fifth Installment Of Its Motion To Amend Study

On March 13, 2019, the PTAB issued the fifth installment of its ongoing Motion to Amend Study, which tracks and analyzes motions to amend filed in AIA trials through September 30, 2018 (end of Fiscal Year 2018). The data...more

Update: Does § 315(e)(2) Say What It Means and Mean What It Says?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

Court of Federal Claims: Patents Are “Public Franchises, Not Private Property”

Since April 2018 when the U.S. Supreme Court handed down its Oil States decision, patent owners have made various arguments addressing issues that were not resolved in that case. One such example is Christy, Inc. v. United...more

Does § 315(e)(2) Mean What It Says and Says What It Means?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute

A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more

Fear No Fees: No Payment of PTO Attorneys' Fees for District Court Patent Review

This decision should be a welcome development for patent applicants seeking review. On July 27, 2018, the U.S. Court of Appeals for the Federal Circuit issued its en banc opinion in NantKwest, Inc. v. Iancu, No. 16-1794...more

Is the Government a “Person” Who May Institute PTAB Trials?

The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more

Swearing Behind: Don’t Get Stuck in a Catch-22 of Corroboration

The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrump A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018) (Moore, joined by Linn and Chen) serves as another reminder to sufficiently corroborate inventor testimony...more

For Substitute Claims, “Possession is Nine-Tenths of the Law”

On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more

PTO’s Rehearing Petition in Bosch: Signaling Future Rulemaking After Aqua Products?

On February 5, 2018, the PTO filed a petition for rehearing of Bosch Auto. Serv. Sol’ns, LLC v. Matal, 878 F.3d 1027 (Fed. Cir., Dec. 22, 2017). The petition asks the panel “not . . . to alter its judgment, but only to...more

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